Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  October 08, 2019

 

This Office action is in response to the applicant’s correspondence dated August 14, 2019.  The applicant proposed overcoming the disclaimer requirement by adding a 2f statement to the record.  However, the 2f statement is improper here because it is based on a prior registration with unrelated services.  Accordingly, the disclaimer requirement is hereby maintained and continued, and the applicant is given an opportunity to provide evidence that the wording has become distinctive.

 

Further, particular wording in the applicant’s identification of goods is indefinite.  Therefore, the requirement that the applicant clarify the wording in the identification of goods and services is maintained and continued.

 

1. §2(f) Claim Based on Active Prior Registration – Relatedness of Goods and Services Not Self Evident

 

Applicant claims that a portion of the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s prior registration for the same mark.  However, the similarity or relatedness of the goods and services in the prior registration and the instant application is not self-evident and therefore applicant’s Section 2(f) claim is not acceptable without additional information.  See 37 C.F.R. §2.61(b); TMEP §1212.04(c). 

 

Although an applicant’s ownership of one or more active prior registrations of the same mark may be sufficient for a prima facie showing of acquired distinctiveness, the prior registration must be for sufficiently similar or related goods and services such that distinctiveness will transfer to the goods and services in the application.  See 37 C.F.R. §2.41(a)(1); In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999) (citing Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1405, 222 USPQ 939, 942 (Fed. Cir. 1984)); TMEP §§1212.04, 1212.04(c).

 

Therefore, applicant must submit evidence and an explanation as to how the goods and services in the claimed active prior registration are similar or related to the goods and services in the application such that distinctiveness will transfer to the goods and services in the application.  See 37 C.F.R. §2.61(b); Bausch & Lomb, Inc. v. Leupold & Stevens, Inc., 6 USPQ2d 1475, 1477-78 (TTAB 1988); TMEP §1212.04(c).

 

2. Clarification of the Identification of Goods and Services

 

The wording “proxes” in the identification of goods is indefinite and must be clarified because it is unclear what the goods are.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses. 

 

The wording “name tags” must be clarified that they are stickers, as metal name tags would be classified in class 006.

 

Applicant is required to amend the wording “letterhead” to “letterhead paper.”

 

Applicant is required to amend the wording “portfolios” to “document portfolios,” as “briefcase type portfolios” are classified in class 018.

 

Applicant must specify that its “journals” are “blank writing journals.”

 

Applicant must specify the nature of its pins, e.g., “drawing pins, push pins,” as jewelry pins are classified in class 014.

 

Applicant must specify that its “certificates” are “printed certificates.”

 

Applicant must specify that its table cover bags are specially adapted for holding said goods, and reclassify the bags with the table covers.

 

Applicant has classified “computer bags; table bags” in International Class 018; however, the proper classification is International Class 009.  Therefore, applicant may respond by (1) adding International Class 009 to the application and reclassifying these goods in the proper international class, (2) deleting “computer bags” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate:

 

International Class 003:       Lip balm

 

International Class 009:       Computer bags; computer tablet bags

 

International Class 014:       Jewelry and ornamental lapel pins

 

International Class 016:       Print materials, namely, books, magazines, brochures, pamphlets, guides, booklets, handbooks, manuals, manuscripts, newsletters, and curriculum in the fields of religion, spiritual and cultural issues and values, personal, spiritual, character and leadership development, prayer, and building spiritual movements and ministry; stickers, adhesive backed paper in the nature of name tags, note cards, folders, post cards, business cards, greeting cards, holiday cards, letterhead paper, printed advertising material in the nature of promotional cards, envelopes, stationary, book marks, flash cards, document portfolios, blank writing journals, drawing pins, push pins, printed certificates, notepads, calendars, posters, paper banners, padfolios, pens, colored pencils, and writing instruments

 

International Class 018:       Backpacks; bags, namely, gift bags, tote bags

 

International Class 020:       Fitted table covers, and bags specially adapted for holding the aforementioned goods

 

International Class 021:       Cups, mugs, water bottles sold empty

 

International Class 024:       Unfitted plastic and textile table covers, and bags specially adapted for holding the aforementioned goods; banners made of textile, namely, cloth and plastic

 

International Class 025:       Clothing, namely, shirts, hats, jackets

 

International Class 035:       Providing advertising, marketing and promotional services, namely, online banners; banner advertisings     

 

An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

RESPONDING TO THIS OFFICE ACTION

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE

 

Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Eli J. Hellman/

Trademark Examining Attorney

Law Office 102

United States Patent and Trademark Office

571.272.8276

eli.hellman@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 08, 2019 for

U.S. Trademark Application Serial No. 88239125

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Eli J. Hellman/

Trademark Examining Attorney

Law Office 102

United States Patent and Trademark Office

571.272.8276

eli.hellman@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 08, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”